A friend of mine, Ali Akbar (@aliakbar), has made me aware of an interesting development going on with the domain he bought, googleappsengine.com (note the “s”). When he bought it, he approached me asking if I would be a blogger for the site, with intent to blog about Google App Engine news and announcements on the domain. He seemed quite excited about it, and, as a fan of Google App Engine, saw this as the perfect domain to write under since Google didn’t seem to be using it.
On Friday, without even time to set up the blog he was intending to create, Ali received the following very generic letter from Google (which he shared with me), asking him, in a very bullied fashion, without any offer to even make it right, to surrender the domain or face legal consequences:
Google is the owner of the well-known trademark and trade name GOOGLE, as well as the domain name GOOGLE.COM. As you are no doubt aware, GOOGLE is the trademark used to identify our award-winning search engine, located at http://www.google.com. Since its inception in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search engines in the world. Google owns numerous trademark registrations and applications for its GOOGLE mark in countries around the world.
Google has used and actively promoted its GOOGLE mark for a number of years, and has invested considerable time and money establishing exclusive proprietary rights in the GOOGLE mark for a wide range of goods and services. As a result of its efforts, the GOOGLE mark has become a famous mark and a property right of incalculable value.
You have registered, without Google’s permission or authorization, the domain name googleappsengine.com (the ‘Domain Name’). The Domain Name is either confusingly similar to or incorporates the famous GOOGLE mark in its entirety, and, by its very composition, suggests Google’s sponsorship or endorsement of your website and correspondingly, your activities.
Your use of the Domain Name constitutes trademark infringement and dilution of Google’s trademark rights and unfair competition. Your use of the Domain Name is diluting use because it weakens the ability of the GOOGLE mark and domain name to identify a single source, namely Google. Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between Google and you, which tarnishes the goodwill and reputation of Google’s services and trademarks. Moreover, your registration and use of the Domain Name is also actionable under the Uniform Dispute Resolution Policy (‘UDRP’). Under similar circumstances, Google has prevailed in numerous UDRP actions. These decisions are located online at http://www.icann.org/udrp/udrpdec.htm.
In view of your infringement of our rights, we must demand that you provide written assurances within 7 days that you will:
1. Immediately discontinue any and all use of the Domain Name;
2. Take immediate steps to transfer the Domain Name to Google;
3. Identify and agree to transfer to Google any other domain names registered by you that contain GOOGLE or are confusingly similar to the GOOGLE mark;
4. Immediately and permanently refrain from any use of the term GOOGLE or any variation thereof that is likely to cause confusion or dilution.
The Google Trademark Team
What???!! “You have registered, without Google’s permission or authorization, the domain name googleappsengine.com (the ‘Domain Name’).” So wait – now I have to get Google’s permission before I get any name that even resembles the Google trademark?
I am astounded at the bullyish nature of this letter, and to assume that anyone that buys any name even resembling the Google trademark to be a violation against their trademark name. Google clearly hasn’t been very good at defending this in the past – just searching with their own search engine, I’m finding tons of examples of sites using the Google name in their own domain name (yes, I “Google’d” it):
The list just gets started from there…
Now, let me preface this with the fact that I am not a Lawyer, but I did learn this in Law class in college. The “Uniform Dispute Resolution Policy” which Google references can be found here, and in the document, it states:
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on Ali’s approaches to me, there was no intention for commercial gain, nor to tarnish the trademark or service mark at issue. I also have e-mail to prove his demonstrable preparations to use the domain in connection with a bona fide offering. Let me also add that my intention to blog for him was simply in my own support of the Google App Engine. I personally had nothing huge to gain from it other than possibly a little exposure from what could possibly be a good blog.
Let me also add that Trademark issue is a very different issue than the Copyright issue I mentioned before with the Mormon Church and Wikileaks. That issue was about Wikileaks knowingly stealing the content owned by the Mormon Church and using it for unintended purposes. This issue is simply about using the Google domain to further promote Google and its properties. Ali had intent to do such, and with my limited knowledge he should have every right to do so.
What if Facebook were to go after my other blog, FacebookAdvice, or even the book I co-wrote, “I’m on Facebook — Now What???“? What about my friend Nick O’Neill’s AllFacebook, or my other friend, Justin Smith’s InsideFacebook. What about my other blog, OpensocialNow? Does this mean I’m the next target to be bullied by Google?
Of course, GoogleAppsEngine.com isn’t my domain, and I don’t know what would make Ali feel better, but my suggestion to Google is to apologize to Ali for such a rude and inappropriate letter to what may be one of their biggest fans, and make right with him. How about, instead of threatening to take it away from him, offering him at least some swag and a little money for the domain? Come on Google – let’s not be evil here. I know you’re better than that.
As for Ali, last I heard he is not backing down. It’s a David vs. Goliath battle, but let’s hope Google can be a little better than Goliath in this case and just back down a little.
What do you think? Am I wrong on this issue? Is this just the same as the copyright issue I mentioned earlier? I’m very interested to hear your thoughts – this seems very unfair to me.